Ex Parte Pomes

Board of Patent Appeals and Interferences

Mar 11, 2009

11346979 (B.P.A.I. Mar. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICK J. POMES
____________

Appeal 2009-1611
Application 11/346,979
Technology Center 2800
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Decided:1 March 11, 2009
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Before PETER F. KRATZ, JEFFREY B. ROBERTSON, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/346,979

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 49-68. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). Claims 1-48 and 69-147 have been previously cancelled by
preliminary amendment.
Claims 49 and 53 are representative of the subject matter on appeal
and are set forth below:
49. A cap comprising:
(a) a bill having top and bottom sides,
(b) a light assembly located under the bill, the light assembly having
upper and lower portions and a light source,
(c) a cover, the cover substantially concealing at least the light
assembly while allowing light to be emitted from the light source the upper
and lower portions of the light assembly being located between the cover
and the top side of the bill,
(d) a battery assembly powering the light source, and
(e) a switch electrically connected to the battery assembly and the
light source.

53. The cap of claim 49, wherein the light assembly is substantially
recessed in the bill.

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Application 11/346,979

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Von Schlemmer US 4,827,384 May 2, 1989
Rife US 5,111,366 May 5, 1992
Hanley US 6,733,150 B1 May 11, 2004
Pomes US 6,994,445 B1 Feb. 7, 2006

SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS2
1. Claims 49-55 and 60-68 are rejected under 35 U.S.C. §103 as
being unpatentable over Von Schlemmer in view of Hanley.
2. Claims 56-59 are rejected under 35 U.S.C. § 103 as being
unpatentable over Von Schlemmer in view of Hanley and further in view of
Rife.
3. Claim 53 is rejected on the ground of non-statutory obviousness-
type double patenting as being unpatentable over claim 5 of Pomes.

2 There is a discrepancy between the rejections listed on page 2 of the Brief
versus the rejections discussed by the Examiner throughout the Answer.
Because the Examiner specifically agreed with Appellant’s statement of the
grounds of rejection and statement of the status of the claims (Ans. 3), we
list the rejections (as well as the applied references) as indicated by
Appellants on page 2 of the Brief. The Examiner has not indicated that the
rejection of claims 56-59 under 35 U.S.C. § 103 as being unpatentable over
Von Schlemmer in view of Hanley and further in view of Rife has been
withdrawn. Further, on page 6 of the Brief, Appellant relies on the same
arguments made with respect to claim 49 as for claims 56-59.

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Appeal 2009-1611
Application 11/346,979

ISSUE
With respect to each of the § 103 rejections, the issue before us is
two-prong: (1) what subject matter is encompassed by the phrase “a light
assembly located under the bill” and (2) does Von Schlemmer teach or
suggest this aspect of the claimed invention?
With respect to the obviousness-type double patenting rejection, the
issue is whether a reasonable interpretation of claim 53 is that the light
assembly is recessed in the bill through the bottom side? If this is a
reasonable interpretation, then claim 53 is obvious over claim 5 of Pomes.

FINDINGS OF FACT
Appellant’s Figure 1 illustrates a bottom view of a cap 10 with light
assembly 110. Figure 2 is a cross section showing light source 120 with
underside 50 of the bill 30 at the top of the figure. The light source is
mounted in a horizontal position, in-line with the long axis of the bill 30.
Reference numeral 170 is a recess compartment for light source 120. Cover
180 and cover 171 can be flush (or nearly flush) with bottom 50 of bill 30.
(See Specification, pages 4-7). There is not a definition in the Specification
regarding the phrase “a light assembly located under the bill” that excludes a
configuration whereby part of the light assembly is located under the bill.
Figure 2 of Von Schlemmer is a bottom view of a cap 10. Flashlight
24 is used as a light source. Opening 14 is created by forming an elongated
aperture centrally through visor (bill) 15. Opening 14 can be provided with
a pivotable flap 35 formed integrally with the visor 15 and including a snap
fastener 36. Flashlight 24 can be inserted into pocket 12 through opening
14. Bulb 38 and lens 39 portions protrude from the opening 14, as shown in
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Appeal 2009-1611
Application 11/346,979

Figure 4. Figure 2 shows flashlight 24 located in pocket 14 and
protruding therefrom. The part of flashlight 24 that is protruding from
pocket 14 is located under visor (bill) 15. The confines of the pocket 12 are
defined by the opposing surfaces of the outside of crown 16, the upper
surface of visor 15, and the concealed undersurface of shield 16. (See col. 3,
ll. 14-54 of Von Schlemmer).
PRINCIPLES OF LAW
During examination, claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). Also, the USPTO must give claims their broadest
reasonable interpretation in light of the Specification. This
means that the words of the claim must be given their plain meaning unless
the plain meaning is inconsistent with the Specification. In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc.,
358 F.3d 1371, 1373 (Fed. Cir. 2004). Limitations appearing in the
specification but not recited in the claim should not be read into the claim.
E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003)
(claims must be interpreted “in view of the specification” without importing
limitations from the specification into the claims unnecessarily). In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). See also Zletz, 893 F.2d at
321-22 (“During patent examination the pending claims must be interpreted
as broadly as their terms reasonably allow.... The reason is simply that
during patent prosecution when claims can be amended, ambiguities should
be recognized, scope and breadth of language explored, and clarification
imposed.... An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
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Appeal 2009-1611
Application 11/346,979

uncertainties of claim scope be removed, as much as possible, during the
administrative process.”).
ANALYSIS
I. The Rejection of Claims 49-55 and 60-68 under 35 U.S.C. §103 as
being unpatentable over Von Schlemmer in view of Hanley and the
Rejection of claims 56-59 under 35 U.S.C. § 103 as being
unpatentable over Von Schlemmer in view of Hanley and further in
view of Rife3

On page 4 of the Brief, Appellant argues that in his invention, the
light assembly is located under the bill, not on top of the bill. Appellant
argues that the flashlight in Von Schlemmer rests above the bill, and refers
to Figures 1, 3, and 4 of Von Schlemmer.
On pages 5-7 of the Answer, the Examiner explains that the cover can
be shield 26, and flashlight 24 is located between the cover (shield 26) and
the top side of bill (flap 35), and that Figure 1 shows that the flashlight is
under the bill (visor) 15.
It appears that the Examiner interprets the phrase “a light assembly
located under the bill” as encompassing a configuration whereby part of the
light assembly is located under the bill. In other words, if part of the light
assembly is located under the bill, then this meets the limitations of the
claim. Given the plain meaning of the word “under”, we cannot disagree
with the Examiner’s interpretation. Am. Acad. of Sci. Tech. Ctr., 367 F.3d at
1369; Chef America, 358 F.3d at 1373; Zletz, 89 F.2d at 321. Although, for

3 We address both of the § 103 rejections together because Appellant
provides the same arguments for each of these rejections. That is, the
secondary teachings of Hanley and Rife are not contested, and therefore our
determinations made with respect to Von Schlemmer address both of these
rejections.
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Application 11/346,979

example, Figure 2 of Appellant’s Specification illustrate a particular
configuration for light source 120 relative to bill 30, the configuration shown
should not be read into the claim. E-Pass Techs., 343 F.3d at 1369; Prater,
415 F.2d at 1404-05; Zletz, 893 F.2d at 321-22.
Turning now to the applied prior art of Von Schlemmer, bulb 38 and
lens 39 portions of flashlight 24 protrude from the opening 14, as shown in
Figure 2 and Figure 4, which is located under visor 15. Appellant fails to
explain how these portions of the flashlight are not located under visor 15.
In view of the aforementioned interpretation of the claimed phrase “a
light assembly located under the bill”, and in view of the aforementioned
teachings of Von Schlemmer, we agree with the Examiner that Von
Schlemmer teaches this aspect of the claimed invention. We therefore agree
with the Examiner’s conclusion of obviousness for each of the 35 U.S.C.
§ 103 rejections.

II. The Obviousness-type Double Patenting Rejection
Appellant’s claim 53 recites “[t]he cap of claim 49, wherein the light
assembly is substantially recessed in the bill”. On pages 3-4 of the Brief,
Appellant argues that it is not required that the light assembly be recessed in
the bill “through the bottom side”. In other words, Appellant argues that
other interpretations can also be made. Appellants state that at least 2
options exist in this regard (Br. 3-4). Yet, Appellants do not explain why the
Examiner’s particular interpretation is in error. While other interpretations
may exist, as contended by Appellant, this does not mean that the
Examiner’s particular interpretation is in error.
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Appeal 2009-1611
Application 11/346,979

We agree with the Examiner’s position as set forth on pages 4 and 7
of the Answer, that a reasonable interpretation of claim 53 is that the light
assembly is substantially recessed in the bill through the bottom side based
upon the fact that claim 49 recites that the light assembly is located under
the bill. Figure 2 of the Specification, for example illustrates light source
120 within recess compartment 170 which can be considered through the
bottom side of the bill.
Hence, we agree with the Examiner’s obviousness-type double
patenting rejection in view of the fact that claim 1 of Pomes recites “a light
assembly attached to the bill through the bottom side . . . wherein the light
assembly is at least substantially recessed in the bill through the bottom
side” and claim 5 recites the cap of claim 1 “further comprising a cover, the
cover being placed over the light source”.

CONCLUSIONS OF LAW
The phrase “a light assembly located under the bill” encompasses a
configuration whereby the light assembly is partially located under the bill,
and Von Schlemmer teaches such a configuration.
A reasonable interpretation of claim 53 is that the light assembly is
substantially recessed in the bill through the bottom side. Thus, claim 53 is
obvious in view of claim 5 of Pomes.

DECISION
The rejection of claims 49-55 and 60-68 under 35 U.S.C. §103 as
being unpatentable over Von Schlemmer in view of Hanley is affirmed.
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Appeal 2009-1611
Application 11/346,979

The rejection of claims 56-59 under 35 U.S.C. § 103 as being
unpatentable over Von Schlemmer in view of Hanley and further in view of
Rife is affirmed.
The rejection of claim 53 on the ground of non-statutory obviousness-
type double patenting as being unpatentable over claim 5 of Pomes is
affirmed.
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)(effective
Sept. 13, 2004).

AFFIRMED

PL Initial:
sld

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