Ex Parte Neal

Board of Patent Appeals and Interferences

Apr 28, 2011

11368547 (B.P.A.I. Apr. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUSAN NEAL
____________

Appeal 2009-009532
Application 11/368,547
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Susan Neal (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision to reject under 35 U.S.C. § 103(a) claims 1-11 as
unpatentable over Lawson (US 2005/0194019 A1, published Sep. 8, 2005),
Specht (US 5,528,320, issued Jun. 18, 1996), Smith (US 3,768,495, issued
Oct. 30, 1973) and Shing (Des. 380,865, issued Jul. 8, 1997).1 We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a headband to hold back hair. Spec.
[002] and fig. 13.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A headband comprising a coronal section with a first end
and a second end, a first arm with a first end and a
second end, said first end hingedly attached to one of said
first end or second end of said coronal section, a second
arm with a first end and a second end, said first end
hingedly attached to the other of said first end or second
end of said coronal section, wherein said second end of
said first arm and said second end of said second arm are
curved in a general J-shape to match the contour of ears
when the headband is in the open position and placed on
top of a head, said J-shaped curved ends extending
downwardly away from a main axis of said first and
second arms, said first arm and second arms are generally
perpendicular to the coronal section when in an open

1 This rejection was introduced by the Examiner as a New Ground(s) of
Rejection in the Examiner’s Answer. Ans. 2. In the Final Rejection mailed
Feb. 14, 2008 (hereafter “Final Rejection”), the Examiner rejected claims 1-
11 under 35 U.S.C. § 103(a) as unpatentable over Lawson and Specht.
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position and when in a closed position, the second end of
the first arm folds toward the coronal section so the first
arm is adjacent the coronal section and the second end of
the second arm folds toward the coronal section and first
arm and lies adjacent the first arm and wherein said
hinged attachment comprises a pair of hinges wherein
each hinge is located on a respective main axis of said
first and second arms, respectively, such that each hinge
is disposed in an interior between said coronal section
and said first and second arms, said first and second arms
each including a first inner portion extending along said
main axis and a second outer portion, said first portion
including said first end hingedly attached to said coronal
section, said second portion including a blind bore
configured in size and shape to receive said first portion,
said first portion being slidably guided within said bore
to foreshorten or lengthen said arm, said first and second
arms each including a respective manually-actuatable
locking mechanism to releasably fix said first portion
with respect to said second portion in one of a plurality of
positions.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellant argues that: (1) neither Lawson nor Shing discloses a pair
of hinges located on a respective main axis of first and second arms (Reply
Br. 6-8); (2) Specht and Smith are non-analogous art (Reply Br. 4); and (3)
neither Specht nor Smith discloses a spring-loaded peg that “is operable on
the small scale required for the arm of a headband” (Reply Br. 5).
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Appellant’s First Argument
Each of independent claims 1, 7 and 11 requires a pair of hinges
“wherein each hinge is located on a respective main axis of the first and
second arms, respectively, such that each hinge is disposed in an interior
between a coronal section and the first and second arms.” App. Br, Claims
Appendix.
According to Appellant, the location of Shing’s hinge is very similar
to the location of Lawson’s hinge, because, similar to Lawson, “the hinges
[of Shing] are offset from a main axis of the arms.” Reply Br. 6. As
evidence, Appellant provides a marked-up version of Figure 2 of Shing that
includes Appellant’s interpretation of the location of the main axis of the
arm of Shing. Reply Br. 7.
At the outset, we note that Appellant’s drawing of the main axis of the
arm of Shing is merely an arbitrary line that does not explain in any manner
why this line, and not another, definitively represents the main axis of the
arm of Shing. Even assuming arguendo that Appellant’s drawn line
constitutes the main axis of Shing’s arm, because the hinge of Shing is
tangent to or slightly overlapping Appellant’s drawn main axis, we find that
at least part of the hinge of Shing is located on the main axis. See Reply Br.
7.
Further, the Examiner found, and we agree, that Lawson discloses a
headband 10 including a coronal section 11 with a first end and a second
end, a first arm 50 having a first end and a second end, wherein the first end
of the first arm 50 is hingedly attached 47 to the first or second end of the
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coronal section 11 and a second arm 51 having a first end and a second end,
wherein the first end of the second arm 51 is hingedly attached 48 to the first
end or the second end of the coronal section 11. Ans. 3. See also Lawson,
para. [0018] and fig. 1. Hence, although we agree that hinges 47 and 48 of
Lawson are located offset from the main axis of arms 50 and 51,
respectively (Ans. 6), like the Examiner, we find that Shing discloses a
headband having a pair of hinges, wherein each hinge is located on a
respective main axis of the first and second arms, such that each hinge is
disposed in an interior2 (inside) region between the coronal section and the
first and second arms. Ans. 6. See also Shing figs. 2 and 7.

Appellant’s Second Argument
Appellant argues that Specht and Smith are non-analogous art,
because neither Specht nor Smith “address [es] the problem of making
headbands adjustable to variations in a wearer's hairstyle, head size and
wearing position.” Reply Br. 4. According to Appellant, (1) Specht
discloses protective eye goggles “which has nothing to do with maintaining
the wearer's hairstyle”; and (2) Smith discloses an adjustable locking
mechanism for a crutch, “a device that has nothing to do with the user's
head.” See App. Br. 12 and Reply Br. 4, respectively.
To determine what is analogous prior art for the purpose of analyzing
the obviousness of the subject matter at issue, any need or problem known in
the field of endeavor at the time of the invention and addressed by the patent

2 An ordinary and customary meaning of the term “interior” is “3: the
internal or inner part of a thing: INSIDE.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (11th ed. 2005).

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or application at issue can provide a reason for combining the elements in
the manner claimed. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007). Thus, a reference in a field different from that of applicant's
endeavor may be reasonably pertinent if it is one that, because of the matter
with which it deals, would have logically commended itself to an inventor's
attention in considering his or her invention as a whole. In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
An inventor seeking to provide a mechanism to adjust the length of
the arms of a headband would look for an adjustable mechanism. In this
case, the Examiner found that Specht discloses a pair of extendable arms 12
that comprise a first portion 12b and a second portion 12c, wherein the
second portion 12c includes a blind bore configured in size to receive the
first portion 12b, the first portion 12b is slidably guided within the bore to
foreshorten or lengthen the arms 12, the first and second arms 12 each
include a respective manually-actuatable locking mechanism to releasably
fix the first portion 12b with respect to the second portion 12c in a plurality
of positions, wherein the first portion 12b includes a spring-loaded peg
12d,12e and the second portion 12c includes a plurality of radial holes 12h
extending from the blind bore to an outer surface of the second portion 12c.
Ans. 4-5. See also Specht, col. 3, ll. 36-48 and figs. 1, 2A and 2B.
Similarly, the Examiner found that Smith discloses a peg 32 having a
forward portion that is configured in size and shape to extend through one of
the radial holes 34 and extend beyond a plane defined by an outer surface of
the outer portion when the peg is in axial registry with one hole. Ans. 5.
See also Smith, col.5, ll. 28-36 and figs. 2 and 6. Hence, because both
Specht and Smith disclose length adjusting mechanisms, we agree with the
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Examiner that both Specht and Smith address the problem addressed by
Appellant. Specifically, Specht addresses “adjusting an ear piece to
accommodate all sizes of wear[er]'s sic heads” (see Final Office Action, p.
6) and Smith addresses adjusting the length of a crutch by using a peg and
hole locking mechanism (see Ans. 8). In conclusion, we agree with the
Examiner’s findings that both Specht and Smith are analogous-art.

Appellant’s Third Argument
Appellant argues that none of the references cited by the Examiner
disclose a spring-loaded peg that “is operable on the small scale required for
the arm of a headband.” Reply Br. 5.
At the outset, we agree with the Examiner that Specht discloses a
spring-loaded peg 12d, 12e. Ans. 4-5. See also Specht, col. 3, ll. 36-48 and
figs. 1, 2A and 2B. Similarly, Smith discloses a spring loaded peg 32, 28.
Ans. 5. See also Smith, col. 5, ll. 23-36 and fig. 6. Although we appreciate
that the size of Specht’s eyewear and Smith’s crutch are different from the
size of a headband, we note that size is not ordinarily a patentable feature.
In re Rose, 220 F.2d 459, 463 (CCPA 1955). Moreover, in this case, the
Examiner is merely providing the adjustable spring loaded mechanisms of
Specht and Smith to the headband of Lawson, and not the eyewear of Specht
or the crutch of Smith. The modification of Lawson to use the adjustable
spring loaded mechanisms of Specht and Smith is nothing more than the
“mere application of a known technique to a piece of prior art ready for the
improvement.” KSR, 550 U.S. at 417. If a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
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that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. Id.
Accordingly, for the foregoing reasons, the rejection of claims 1, 4-7
and 11 as unpatentable over Lawson, Specht, Smith and Shing is sustained.
Regarding the rejection of claims 2, 3 and 8-10, Appellant does not
present any additional arguments. Reply Br. 9. As such, the rejection of
claims 2, 3 and 8-10 as unpatentable over Lawson, Specht, Smith and Shing
is likewise sustained.

DECISION
The Examiner’s decision to reject claims 1-11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

MP