Ex Parte Oates

Patent Trial and Appeal Board

Jun 29, 2015

12641719 (P.T.A.B. Jun. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KENNETH OATES
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Appeal 2013-006966
Application 12/641,719
Technology Center 3700
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Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kenneth Oates (Appellant) seeks review, under 35 U.S.C. § 134(a), of
the Examiner’s decision to reject claims 1, 3, 4, 6, and 8–21. Claims 2, 5,
and 7 have been canceled.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In a Response to [Final] Office Action (filed June 11, 2012) and an
Amendment before Appeal Brief (filed Oct. 8, 2012), Appellant proposed
cancelling claim 8. Resp. 3; Amend. 3. In two Advisory Actions—mailed
July 6, 2012, and October 24, 2012, respectively—the Examiner stated that
Appellant’s proposed amendments (including cancelling claim 8) would not
be entered. Accordingly, claim 8 is pending.
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2
CLAIMED SUBJECT MATTER
The disclosed subject matter “is in the field of apparatuses with
adjustable shading.” Spec. 1, l. 11. Independent claim 1, shown below, is
illustrative of the claims on appeal:
1. A shading apparatus comprising:
a [head band] which generally forms a loop;
a side locking adjusting means, wherein said
side locking adjusting means is defined by a first
cord with a first end that is connected to the
headband on one side thereof said loop and a
second free end that is configured to be pulled
through a first cord lock so that the headband’s
loop size is reduced via asymmetrical cinching;
a brim; and,
a havelock with a cinching means for
adjusting the havelock.2

EVIDENCE RELIED ON BY THE EXAMINER
Schuessler US 2,878,479 Mar. 24, 1959
Walkuski US 4,334,325 June 15, 1982
Gregg US 4,845,782 July 11, 1989
Pu US 6,484,323 B1 Nov. 26, 2002

2 For reasons discussed below, the claims on appeal are those pending
as of the Final Office Action mailed April 11, 2012, which are reflected in
the amendments in a Response to Office Action filed February 13, 2012.
See Resp. 2 (Amendments to the Claims); see also Final Act. 2 (entering
Appellant’s proposed amendments).
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REJECTIONS ON APPEAL3
1. Claims 3, 4, 6, and 8–21 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter regarded as the invention.
2. Claims 1, 6, 8, 12–16, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gregg and Walkuski.
3. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gregg, Walkuski, and Schuessler.
4. Claims 9, 10, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Gregg, Walkuski, and Pu.
5. Claims 11 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gregg, Walkuski, Pu, and Schuessler.

ANALYSIS
Status of the Proposed Amendments
In the Amendment Before Appeal Brief filed on October 8, 2012 (the
“October 2012 Amendment”), Appellant proposed various amendments to
the pending claims. See Amend. 2–6. In the Advisory Action Before the
Filing of an Appeal Brief mailed on October 24, 2012, the Examiner stated
that the proposed amendments would not be entered. See Adv. Act. 2.

3 The Examiner rejected claims 12 and 20 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter regarded as the invention based on the phrase “the steps”
recited in those claims. See Final Act. 7 (¶ 11), 8 (¶ 16). In the Answer, the
Examiner withdraws those rejections. See Ans. 4.
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Appellant asserts various reasons that the Examiner should have
entered the October 2012 Amendment. Appeal Br. 16–19. Based on those
reasons, Appellant “requests that the amendments be entered.” Id. at 19.
We cannot grant the relief sought by Appellant because the issue is
not within the jurisdiction of the Patent Trial and Appeal Board (PTAB).
The refusal by an examiner to enter a proposed amendment filed after a final
rejection is a petitionable matter, rather than one for appeal. See In re
Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Mindick, 371 F.2d
892, 894 (CCPA 1967) (stating that the predecessor to the PTAB “does not
consider the issue of whether the examiner’s refusal to enter the proposed
amendment after final rejection constituted an abuse of discretion”)); see
also 37 C.F.R. § 1.127 (2012) (“From the refusal of the primary examiner to
admit an amendment, in whole or in part, a petition will lie to the Director
under § 1.181.”). Thus, the pending claims do not include the changes
proposed in the October 2012 Amendment.4

Rejection 1 – The rejection of claims 3, 4, 6, and
8–21 under 35 U.S.C. § 112, second paragraph
Appellant generally contends that “the Examiner failed to clearly
identify the language that causes the claim[s] to be indefinite and thoroughly
explain the reasoning for the rejection.” Appeal Br. 20. In addition,
Appellant argues that the issues identified by the Examiner in this Rejection
are moot based on the October 2012 Amendment. See id. at 21–25.

4 We note that the Claims Appendix included with Appellant’s Appeal
Brief incorrectly lists the claims as if the October 2012 Amendment had
been entered.
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The Examiner responds that for each indefiniteness rejection, “the
Examiner has notated each claim, limitation, and line where each limitation
is found within the claim.” Ans. 24. In addition, the Examiner states that
“[s]ince the claim amendments after[]final were never entered, the 112,
second paragraph rejections are still upheld.” Id.
We are not apprised of error based on Appellant’s argument generally
for the reasons set forth by the Examiner, with some additional comments.
Appellant relies on the October 2012 Amendment as “render[ing] moot” this
Rejection. See Reply Br. 6 (“All of the § 112 rejections have been resolved
via the [October 2012 Amendment]. Accordingly, the rejection should be
rendered moot and should be overruled because said amendment should
have been entered.”). The Amendment was not, however, entered by the
Examiner (see Adv. Act. 2) and the PTAB cannot “enter” the Amendment
on appeal (for reasons discussed above). Because Appellant’s arguments
therefore do not address the pending claims, we sustain the rejection of
claims 3, 4, 6, and 8–21 under 35 U.S.C. § 112, second paragraph.

Rejections 2–5 – The rejection of claims
1, 3, 4, 6, 8–21 under 35 U.S.C. § 103(a)
A. Level of Ordinary Skill in the Art
Appellant argues that the Examiner “has not met the prima facie
burden of proof required to reject the present invention” because the
“Examiner has made no explicit or implicit indication of the level of
ordinary skill in making the rejections.” Appeal Br. 34. According to
Appellant, “[t]he rejection is unsustainable without establishing the level of
ordinary skill.” Id. at 15 (citing MPEP § 2141).
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In the Response to Argument section of the Answer, the Examiner
states that various issues are “within [the] common sense of the apparel art
(one of ordinary skill in the art).” See Ans. 26, 27, 31, 33.
We are not apprised of error based on Appellant’s argument because
“the absence of specific findings on the level of ordinary skill in the art does
not give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown.’” See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (quoting Litton Indus.
Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Here, we consider the cited prior art as representative of the level of ordinary
skill in the art. See id; see also In re GPAC Inc., 57 F.3d 1573, 1579 (Fed.
Cir. 1995) (holding that the predecessor to the PTAB did not clearly err in
finding that the level of skill in the art was best determined by the references
of record).
B. Claim 1
In rejecting claim 1, the Examiner finds, inter alia, that “Gregg
discloses . . . a shading apparatus comprising a head band (via 10) which
generally forms a loop (via Figure 11); with a side locking adjusting means
(via 9, (sizing band))” but finds that “Gregg . . . does not disclose . . .
wherein the second free end is pulled through a first cord lock so that the
headband’s loop size is reduced via asymmetrical cinching.” Ans. 9, 10.
The Examiner states as follows:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to provide the headband
of Gregg wherein a second free end is pulled through a first
cord lock so that the headband’s loop size is reduced via
asymmetrical cinching as taught by Walkuski as another
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interchangeable form of a cinching means to a girth of a user’s
head through a headband.
Id. at 10.
Appellant argues that “Gregg does not disclose a side locking
mechanism of any form” and that “one of skill in the art would not combine
Gregg and Walkuski because the locking systems of Gregg and Walkuski
are not interchangeable.” Appeal Br. 27–28. According to Appellant, “one
of ordinary skill in the art would not see Gregg and Walkuski and find it
obvious to feature both a symmetrical and an asymmetrical cinching in a
shading apparatus.” Id. at 28.
The Examiner responds that “‘[a] side lock mechanism’ can be
broadly interpreted as anything that can be adjusted (in this case a
drawstring (sizing band)[)] from a side or two sides to essentially ‘lock’.”
Ans. 29. The Examiner also states as follows:
Since the structure of [element] (9) [of Gregg] is essentially
disposed in (10) which wraps around the shading apparatus of
Gregg at both respective sides of the shading apparatus and will
more or less “lock” around at each side of the shading apparatus
as brought capable by areas (11) & (12)), is therefore
considered a “side locking adjusting means”.
Id. In addition, the Examiner states that both “Gregg and Walkuski provide
a girth adjusting means to the girth of a wearer’s crown for a head covering
(e.g. shading apparatus)” and that “[i]t [would] have been obvious to one of
ordinary skill in the art at the time the invention was made to provide one
known-girth adjusting mean for another regardless of mere location and
placement within a headband.” Ans. 25–26, 30–31.
We are not apprised of error based on Appellant’s argument generally
for the reasons set forth by the Examiner, with some additional comments.
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As to the contention that “Gregg does not disclose a side locking mechanism
of any form” (Ans. 27), we note that the Specification here broadly describes
the “adjusting means.” See Spec. 6, ll. 3–8 (stating that “any type of
adjusting means may be used”). In addition, Appellant provides no evidence
or persuasive reasoning that the relevant aspects of Gregg and Walkuski are
not interchangeable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (“[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”).
Finally, we are not apprised of error based on Appellant’s contention
regarding symmetrical and asymmetrical cinching because the Rejection
only involves “asymmetrical cinching as taught by Walkuski.” See Ans. 10.
C. Remaining Claims
Because we sustain the rejection of claims 3, 4, 6, and 8–21 under
35 U.S.C. § 112, second paragraph, and because there are open issues
regarding the scope of the claims and the potential need for a further prior
art search if the proposed amendments are entered in further examination
(see Adv. Act. 3), we do not address the prior art rejections of claims 3, 4, 6,
and 8–21.

CONCLUSION
For the reasons set forth above, we AFFIRM the decision to reject
claims 3, 4, 6, and 8–21 under 35 U.S.C. § 112, second paragraph, and
AFFIRM the decision to reject claim 1 under 35 U.S.C. § 103(a).5

5 See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a

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

AFFIRMED
llw

claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.”).