Ex Parte Presswood

Board of Patent Appeals and Interferences

Dec 22, 2008

11291454 (B.P.A.I. Dec. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS L. PRESSWOOD
__________

Appeal 2008-4774
Application 11/291,454
Technology Center 3700
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Decided: December 21, 2008
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Before DEMETRA J. MILLS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
headband. The Examiner has rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses a “headband that includes coupling
means, preferably a tie band, for retaining the headband on the wearer’s
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Application 11/291,454

head, and free tails that promote the wicking of the moisture from the
wearer’s head” (Spec. ¶ 0015). The Specification also discloses that the
headband may be “a unitary, circular piece with at least one free tail for
wicking and draining the moisture” (id.).
Claims 1-15 are on appeal. Claims 1, 3, and 9 are representative and
read as follows:
Claim 1: A self-wicking headband comprising:
a main body;
coupling means; and,
at least one moisture-wicking free tail.

Claim 3: The self-wicking headband of claim 1, wherein said at least
one free tail comprises more than two free tails.

Claim 9: A method of making a self-wicking headband comprising
the step of:
forming a piece of cloth having a central strand and first and second
end components,
said first and second end components each comprising at least two
end strands, at least one of said at least two end strands being a moisture-
wicking end strand,
said at least two end strands joined with each other and with said
central strand.

The claims stand rejected as follows:
• claims 1, 2, 4, and 6-8 under 35 U.S.C. § 102(b) as anticipated by
Henderson;1
• claims 3 and 5 under 35 U.S.C. § 103(a) as being unpatentable over
Henderson in view of Bilodeau;2 and

1 Henderson, US 5,590,422, Jan. 7, 1997.
2 Bilodeau, US 5,878,756, Mar. 9, 1999.
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• claims 9-15 under 35 U.S.C. § 103(a) as being unpatentable over
Henderson.
ANTICIPATION
The Issue
The Examiner has rejected claims 1, 2, 4, and 6-8 under 35 U.S.C.
§ 102(b) as anticipated by Henderson. The claims have not been argued
separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner’s position is that Henderson “discloses a headband
comprising a main unitary circular body/closed loop 12 . . . [,] two ends 39
and 41 of the sweatband [that] can be attached to one another through the
use of hook and loop tape . . . [, and an] elongated member 14 [that] is
attached to the headband and has two free ends 16 and 18 that can be used to
tie around the hair of a wearer” (Answer 3-4).
Appellant contends that Henderson fails to disclose “at least one
moisture-wicking free tail,” as the term “free tail” would be understood by
one of ordinary skill in the art” (Appeal Br. 8).
The issue presented is: Does the evidence support the Examiner’s
finding that Henderson discloses a headband having at least one moisture-
wicking free tail?
Findings of Fact
1. The Specification states that “the coupling means” can be a tie
band, a button, a hook, a zipper, velcro, and any combination thereof (Spec.
¶ 0005).
2. Henderson discloses “a combined headband an[d] hair-retainer”
that “includes a closed-loop 12 of a fabric material” and an “elongated hair-
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retainer member 14, having opposite, free ends 16 and 18, …attached at a
region 20” (Henderson, col. 2, ll. 44-59).
3. Fig. 5 of Henderson is shown below:

Fig. 5 is said to show a “head band loop … formed from a strip
demountably joinable at each end” (Henderson, col. 2., ll. 36-39) with
“opposite ends 39 and 41 of the strip 34 joined to form … a demountable
closure 37” (id. at col. 4, ll. 2-5).
4. Henderson discloses that the “demountable attachment between the
ends … may be provided by a hook and loop closure arrangement of the
type commonly referred to by the tradename ‘VELCRO’” (id. at col. 3, l. 67
through col. 4, l. 2).
5. Henderson discloses that the “closed-loop [i.e. loop 12] is
preferably a closed-loop band of a resilient fabric” that is preferably “both
elastic and absorbent, or the closed-loop is provided with an absorbent liner
for absorbing perspiration” (id. at col. 2, ll. 6-9).
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6. Henderson discloses that the “hair-retainer [i.e. elongated hair
retainer member 14] preferably is formed around a malleable core-portion,
the core portion being covered with a fabric which matches or complements
fabric of the closed-loop” (id. at col. 2, ll. 10-12).
7. Henderson discloses that the fabric of both the closed-loop 12 and
retainer member 14 can be “a five percent LYCRA brand spandes [sic,
spandex] material ninety-five percent cotton fabric” (id. at col. 3, ll. 49-50;
col. 4, ll. 6-17).
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
“To anticipate a claim, a reference must disclose every element of the
challenged claim and enable one skilled in the art to make the anticipating
subject matter.” PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558,
1566 (Fed. Cir. 1996).
Analysis
The claims are directed to a self-wicking headband that includes (1) a
main body, (2) coupling means, and (3) at least one moisture-wicking free
tail. The Specification discloses that the coupling means may be
VELCRO®.
Appellant does not dispute that Henderson discloses a headband with
a coupling means, and the headband shown in Figure 5 of Henderson
(described as including VELCRO® coupling means), meets the “main body”
and the “coupling means” limitations of claim 1.
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Appellant argues, however, that Henderson does not disclose a
headband having “a moisture wicking free tail.” First, Appellant argues that
Henderson does not disclose a headband having a “free tail” because
“[n]either of the two free ends 16 and 18 of Henderson '422 are ‘free tails’”
in that the “free ends 16 and 18 are used to constrain the hair, [and] when
constraining the hair the free ends are knotted or tied and are no longer free”
(Appeal Br. 9).
This argument is not persuasive. The claims are directed to a product,
not a method of using a product. Whether or not Henderson’s headband
would have “free tails” when in use (i.e., in a user’s hair), it has two free
ends at least prior to use in the hair. See Henderson’s Figure 5, reproduced
above. In addition, Henderson’s Figure 2 reasonably appears to show that
the ends 16 and 18 of element 14 are “free tails” even when the headband is
in use.
Second, Appellant argues that Henderson does not disclose a
headband having a free tail that is moisture wicking because the “process of
knotting or tying the free ends 16 and 18 of Henderson '422 inhibits the
moisture wicking process” by preventing the “flow of moisture through the
knot” (Appeal Br. 9).
This argument is not persuasive. Henderson discloses that the free
tails of the headband are made of the same absorbent fabric as the main body
of the headband. Again, the claims are to a product, not a method.
Regardless of whether a knot would inhibit the flow of moisture in the free
tails of Henderson’s headband when it was in use, the free tails of
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Henderson are inherently moisture wicking, at least prior to the use of
headband in the hair, since they are made from absorbent fabric.
In addition, there is no requirement in claim 1 that the “moisture
wicking free tails” wick moisture from the main body or from the coupling
means. Claim 1 simply requires that the free tails be functional to wick
moisture. Henderson’s free tails satisfy that functional limitation,
irrespective of whether moisture would flow from the main body to the free
tails.
Conclusions of Law
The evidence supports the Examiner’s finding that Henderson
discloses a headband having at least one moisture-wicking free tail.
OBVIOUSNESS I
The Issue
The Examiner has rejected claims 3 and 5 under 35 U.S.C. § 103(a) as
obvious in view of Henderson and Bilodeau. The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner’s position is that Henderson does not disclose a
headband having “more than two free tails” but Bilodeau discloses “a cap
12 having a headband 14” and “[a]ttached to the headband . . . a plurality of
additional free ends 24” (Answer 4). The Examiner concludes that it would
have been obvious “to modify Henderson in order to provide headwear that
can contain the wearer’s hair during athletic activities” (Answer 4-5).
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Appellant contends that neither Henderson nor Bilodeau disclose or
suggest a self-wicking headband having “at least one moisture-wicking free
tail” (Appeal Br. 9).
The issue with respect to this rejection is whether the Examiner erred
in finding that the combination of Henderson and Bilodeau would have
made obvious a headband having more than two moisture wicking free tails.
Findings of Fact
7. The Specification provides that the “headband is made from a
single piece of material that is folded in half and sewn about the middle,
leaving at least two free tails on each end,” such that “[p]referably, one tail
is used to tie the headband, while another free tail promotes the drying of the
restrained or tied portion of the headband.” (Spec. ¶ 0015)
Principles of Law
Anticipation is the epitome of obviousness. See, e.g., Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).
Analysis
Claim 3 requires that the headband have more than two moisture
wicking free tails. The Specification defines each end of an unfastened
headband as having two free tails, one of which may be used to fasten the
headband. Henderson discloses a headband that can be fastened by Velcro
(see Henderson’s Fig. 5, above). The unfastened headband of Henderson’s
Figure 5 would have two “free tails” at each end: one end that is used to
form closed loop 12 and one end of the retainer member 14, for a total four
free tails. Further, as discussed above, Henderson discloses that the fabric
covering the free tails of the hair retainer matches the absorbent fabric of the
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headband and therefore, the “more than two free tails” would be moisture
wicking. Thus, Henderson alone supports the Examiner’s conclusion that
claim 3 would have been suggested by Henderson and Bilodeau.
Conclusions of Law
The evidence supports the Examiner’s conclusion that the
combination of Henderson and Bilodeau would have made obvious a
headband having more than two moisture wicking free tails.
OBVIOUSNESS II
The Issue
The Examiner has rejected claims 9-15 under 35 U.S.C. § 103(a) as
obvious in view of Henderson. The claims have not been argued separately
and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner’s position is that “Henderson does not state the method
of making … the headband, but it would have been obvious to one of
ordinary skill in the art at the time the invention was made that the method
of manufacture would produce the device claimed” (Answer 5).
Appellant contends that Henderson “fails to disclose … a self-wicking
headband” and thus it “cannot render obvious a method [of] making” one
(Appeal Br. 8-9).
The issue with respect to this rejection is whether Henderson discloses
a method of making a headband within the scope of claim 9.
Principles of Law
The criteria for determining obviousness are: 1) scope and content of
prior art; 2) differences between prior art and claims at issue; 3) level of
ordinary skill in the art at the time invention was made; and 4) objective
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evidence of non-obviousness. Graham vs. John Deere Co., 383 U.S. 1
(1966).
Analysis
Henderson discloses a headband having two ends (see Henderson’s
Fig. 5, above). Each end comprises two strands (the main body strand and
the hair retainer strand), both strands being made of moisture wicking
material, as discussed above. Thus, the only difference between the method
of claim 9 and the disclosure in Henderson is that claim 9 recites a method
step of “forming a piece of cloth.”
Because Henderson discloses a piece of cloth having the shape
described in claim 9, the reference would have suggested “forming a piece
of cloth” into the disclosed shape, as recited in claim 9: the only way a piece
of cloth could attain the shape described in Henderson is if was formed into
that shape.
Conclusions of Law
The evidence supports the Examiner’s conclusion that Henderson
suggests the method of making a headband defined by claim 9.
SUMMARY
We affirm the rejection of claims 1, 2, 4, and 6-8 under 35 U.S.C.
§ 102(b) as being anticipated by Henderson and the rejection of claims 3, 5,
and 9-15 under 35 U.S.C. § 103(a) as being obvious in view of Henderson
(claims 9-15) or Henderson and Bilodeau (claims 3 and 5).
AFFIRMED

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FULBRIGHT & JAWORSKI L.L.P.
FULBRIGHT TOWER
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HOUSTON TX 77010-3095

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