Ex Parte Murphy et al

Patent Trial and Appeal Board

Dec 24, 2013

12243271 (P.T.A.B. Dec. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY E. MURPHY and DANIEL J. CRAM
____________________

Appeal 2012-001675
Application 12/243,271
Technology Center 3700
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Before: EDWARD A. BROWN, LYNNE H. BROWNE, and
BART A. GERSTENBLITH, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/243,271

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STATEMENT OF THE CASE
Timothy E. Murphy and Daniel J. Cram appeal under 35 U.S.C. § 134
from a rejection of claims 1-7 and 17. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and designate our affirmance as A NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
The claims are directed to an athletic protection device. Claims 1, 2,
and 17 are independent. Claims 1 and 17 are reproduced below:
1. An athletic cup comprising a first region integrally formed
together with a second region, the first region and the second
region being formed of the same compositional material,
wherein the first region is more rigid than the second region.
17. An athletic cup comprising:
(a) a frontal region comprising:
i. granular ethylene vinyl acetate copolymer with a
density of about 70 kg/m3 or greater,
ii. a convex outer surface with an apex that is about one-
half (0.50) to one (1.0) centimeters thick,
iii. a concave inner surface;
iv. and a volume sufficient to enclose the wearer's
genitals; and
(b) a resilient comfort edge adapted to contact a wearer's skin,
comprising ethylene vinyl acetate copolymer with a density of about
40 kg/m3 wherein the frontal region and the resilient comfort edge are
portions of a unitary structure.

PRIOR ART
Purnell US 6,058,516 May 9, 2000
Littell
Clodius-Talmadge
US 2004/0092851 A1
US 2009/0065008 A1
May 13, 2004
Mar. 12, 2009
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GROUNDS OF REJECTION
1. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Littell and Purnell.1
2. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Littell, Purnell, and Clodius-Talmadge.

OPINION

Claim 1
The Examiner finds that Littell discloses every element of
independent claim 1 except for “the first region and the second region being
formed of the same compositional material, wherein the first region is more
rigid than the second region.” Ans. 7-8. The Examiner further finds that
Purnell teaches:
[A] protective headgear comprising a first region or inner pad
(14) and a second region or outer pad (15), the first region and
the second region being formed of the same compositional
material, as for example EVA ([Col. 4], lines 15 - 17) and [(Col.
5], lines 5 - 9) wherein the first region is more rigid than the
second region.
Ans. 8. The Examiner determines that “[s]ince both pads (14 and 15)
respectively are constructed of different densities inherently, one region will

1 This is a new ground of rejection presented in the Examiner’s Answer.
Ans. 7-11. We understand that the Examiner withdrew the previous
rejection of claims 1-7 under 35 U.S.C. § 103(a) as being unpatentable over
Littell, Clodius-Talmadge, and Purnell. See Final Office Action dated
Oct. 8, 2010. Accordingly, Appellants’ arguments in regard to Clodius-
Talmadge in the Appeal Brief are moot for this ground of rejection.
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be more rigid than the other region.” Id. Based on the findings and this
determination, the Examiner concludes that it would have been obvious to
form Littell’s first and second regions from the same compositional material,
such that the first region is more rigid than the second region as taught by
Purnell in order to absorb and divert impact forces. See id.
Appellants argue that “[n]othing in the Office Action addresses the
‘integral’ element of the claim.” App. Br. 5; see also Reply Br. 8. The
Examiner finds that Littell discloses an integral male genitalia protection
device. Ans. 7. Appellants have not apprised us of error in this finding.
Accordingly, Appellants’ argument is not persuasive.
Appellants also argue that “Purnell’s different regions of density are
clearly not integrally formed together . . . . [Therefore,] [t]here is simply no
motivation to modify Purnell.” App. Br. 5; Reply Br. 8-9. Appellants’
argument is not responsive to the rejection as articulated by the Examiner.
As discussed supra, the Examiner finds that Littell discloses integral
regions, and does not rely on Purnell for this feature. Further, the rejection
does not contemplate the modification of Purnell.
Appellants further argue that Littell “does not suggest different
rigidity regions at all.” App. Br. 5; Reply Br. 9. While we agree that Littell
does not describe different rigidity regions, this is not indicative of error. As
discussed supra, the Examiner finds that Purnell teaches different rigidity
regions. Appellants have not apprised us of error in this finding.
Accordingly, Appellants’ argument is not persuasive.
In the Reply Brief, Appellants argue that independent “[c]laim 1 is not
a ‘product-by-process’ claim.” Reply Br. 7. We agree; however, the
Examiner’s mischaracterization of claim 1 as a “product by process” claim
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does not negate the prima facie case set forth by the Examiner. As discussed
supra, the Examiner correctly finds that Littell discloses “[a]n athletic cup
comprising a first region integrally formed together with a second region” as
required by claim 1. See Ans. 7. Appellants do not apprise of any error in
the Examiner’s finding that Littell discloses an integral structure.
For these reasons, we sustain the Examiner’s rejection of claim 1.
Claims 2-7
The Examiner’s findings with respect to independent claim 2 are
substantially the same as the findings made for independent claim 1
discussed supra. Ans. 8. The Examiner determines that “[s]ince both [of
Purnell’s] pads (14 and 15) respectively are constructed of different densities
inherently, one region will be more rigid than the other region.” Id. at 9.
The Examiner additionally determines that it would have been obvious
to construct the athletic cup comprising the same compositional
[sic] with different densities, since it has been held to be within
the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a
matter of obvious design choice.
Id. (citing In re Leshin, 277 F.2d 197 (CCPA 1960)).
Appellants argue that “[t]he rejection fails to even mention the
‘unitary structure’ limitation.” App. Br. 6; see also Reply Br. 9. However,
the Examiner finds that Littell discloses a male genitalia protection device of
a “unitary structure.” Ans. 8. Appellants have not apprised us of error in
this finding. Accordingly, Appellants’ argument is not persuasive.
Appellants argue that “nothing in the cited references suggests or even
supports the idea of having different density regions within a single unitary
structure.” App. Br. 7. As discussed supra, the Examiner reasons that the
problems of absorbing and diverting impact forces would have lead one of
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ordinary skill to modify Littell’s single unitary structure to incorporate
different density regions as taught by Purnell. See Ans. 9. Moreover, this
argument is foreclosed by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007), in which the Court rejected the rigid requirement of a teaching or
suggestion or motivation to combine known elements in order to show
obviousness. KSR, 550 U.S. at 415. The Court noted that an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at 418.
In the Reply Brief, Appellants argue that “Purnell is non-analogous
art.” Reply Br. 10. Appellants’ argument is unconvincing. Just as an
inventor considering a hinge and latch mechanism for portable computers
would naturally look to references employing other “housings, hinges,
latches, springs, etc.,” a person of ordinary skill in the art considering
materials to address the problem of protecting an athlete from injury to the
groin, wherein such injury is due to external impacts, would consider
references (e.g., Purnell) describing materials for protecting an athlete from
injury to the same and other delicate body parts, such as the ear, wherein
such injury is also due to the same or similar types of bodily impacts. See In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
For these reasons, we sustain the Examiner’s rejection of claim 2.
Appellants have not provided separate arguments for the patentability of
claims 3-7. App. Br. 6-7. Accordingly, we also sustain the Examiner’s
rejection of claims 3-7.
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Claim 17
The Examiner finds that Littell discloses every element of
independent claim 17 except for:
(1) the frontal region comprises granular ethylene vinyl acetate
copolymer with a density of about 70 kg/m[3,] (2) the resilient
edge comprises ethylene vinyl acetate copolymer comprises a
density of about 40 kg/m[3,] and (3) the convex outer surface
with an apex that is about one-half (0.50) to one (1.0)
centimeters thick, and the inner apex is between about one-half
and one centimeters.
Ans. 6. The Examiner further finds that Clodius-Talmadge “teaches an
athletic cup or a protective shield (10) for protecting the female genitalia
having a unitary structure formed from rubbery polymer material such as
ethylene vinyl acetate (EVA).” Id. The Examiner additionally finds that:
Purnell teaches a wrestling ear guard (as shown in figures 1 and
2) comprising a cup (13) molded from a plastic material and has
a concave and a convex surface. The cup further comprises an
inner pad (14) formed from EVA foam of a first density, for
example EVA P20 having a density of about 45 Kg/M3 ([Col.
4], lines 1 - 19) and an outer pad (15) formed of a lower density
foam, for example EVA P20 having a density of about 35
Kg/M3.
Id. Based on these findings the Examiner concludes that it would have been
obvious:
to construct the resilient comfort edge comprises ethylene vinyl
acetate copolymer with a density of about 40 kg/m[3] and the
frontal region comprises granular ethylene vinyl acetate
copolymer with a density of about 70 kg/m[3] of Littell as
taught by Clodius-Talmadge and Purnell in order to protect a
user against physical shock or blow, since it has been held that
discovering an optimum value of a result effective variable
involves only routine skill in the art. In re Boesch, 617 F.2d
272, 205 USPQ 215 (CCPA 1980).
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Ans. 7. The Examiner further determines that it would have been obvious
to construct the convex outer surface with an apex that is about
one-half (0.50) to one (1.0) centimeters thick, and the inner
apex is between about one-half and one centimeters to
accommodate different size individuals, since it has been held
that where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves
only routine skill in the art. In re Aller, [220 F.2d 454 (CCPA
1955)].
Id.
Appellants do not apprise us of any error in the Examiner’s findings
and conclusions regarding the claimed numerical values.
Appellants argue that “nothing in any of the cited art has anything to
do with a unitary structure as described in the claim.” App. Br. 7; see also
Reply Br. 5. Appellants further argue that Clodius-Talmadge is not
analogous art. See App. Br. 8; Reply Br. 5-7.
We need not determine if Clodius-Talmadge is analogous art because
the Examiner’s findings based on Clodius-Talmadge are cumulative and thus
unnecessary to support a prima facie case. Specifically, Clodius-Talmadge
is relied upon in the rejection to show that a unitary structure made from
EVA is known. See Ans. 6. However, the Examiner finds that Littell
describes a unitary structure, finds that Purnell teaches EVA and articulates
reasoning with rational underpinning for modifying Littell’s single unitary
structure to incorporate different density regions as taught by Purnell as
discussed supra with respect to claim 2. Accordingly, we remove Clodius-
Talmadge from the rejection of claim 17 and affirm the rejection of claim 17
based on the Examiner’s findings and reasoning set forth on pages 6 and 7 of
the Examiner’s Answer with respect to Littell and Purnell and also the
Examiner’s findings and reasons for modifying Littell in view of Purnell
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discussed with respect to claim 2 on pages 8 and 9 of the Examiner’s
Answer.
Appellants further argue that “Purnell is likewise non-analogous art.”
App. Br. 11; see also Reply Br. 5-7. Appellants’ argument is not persuasive
for the reasons discussed supra with respect to claim 2.
For these reasons, we sustain the Examiner’s rejection of claim 17.
As our conclusion is based on findings of fact and reasoning that differs
from that articulated by the Examiner, we designate our affirmance as a new
ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a
full and fair opportunity to react to the rejection.

DECISION
The Examiner’s rejection of claims 1-7 and 17 is AFFIRMED. The
rejection of claim 17 is designated as NEW GROUND OF REJECTION
under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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