Ex parte PRIMEAU

Board of Patent Appeals and Interferences

Mar 30, 1998

08445540 (B.P.A.I. Mar. 30, 1998)

Application for patent filed May 22, 1995.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CHARLES W. PRIMEAU
________________
Appeal No. 97-0828
Application 08/445,5401
________________
ON BRIEF
________________
Before CALVERT, STAAB and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1, 4
through 6, 8 and 10 through 12. Claims 7 and 13, the only
other claims pending in the application, have been indicated
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as containing allowable subject matter but stand objected to
as depending from rejected base claims.
The invention relates to a protective face mask/helmet
assembly particularly designed for use by baseball and
softball catchers. Claim 1 is illustrative and reads as
follows:
1. A protective helmet and facemask assembly which
comprises:
a helmet for covering at least a portion of a person’s
head, an open face area, and a top portion adjacent to said
open face area, said top portion having a top edge bordering
said open face area;
a facemask comprising a frame for fitting around a
person’s face, an open grid of protective elements secured to
said frame and covering an area within said frame;
said facemask frame overlapping said top edge;
padding means between said facemask and said edge;
elastic strap means connected between opposite sides of
said helmet adjacent to said face area and opposite sides of
said facemask for permitting said facemask to be slid from a
first position over said face area to a position over said top
portion; and
said elastic strap means including means for adjusting
the length of said elastic straps to assure snug engagement of
said facemask to a person’s face in said first position and
frictional engagement with said top portion in said second
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position.
The references relied upon by the examiner as evidence of
obviousness are:
Finken et al. (Finken) 2,903,700 Sept. 15, 1959
Bowen 3,262,125 Jul. 26, 1966
Hale 3,732,574 May 15,
1973
Zide 4,651,356 Mar. 24,
1987
Copeland et al. (Copeland) 5,093,936 Mar. 10, 1992
The appealed claims stand rejected under 35 U.S.C. § 103
as follows:
a) claims 1 and 8 as being unpatentable over Hale in view
of Bowen and Finken;
b) claims 4, 5, 10 and 11 as being unpatentable over Hale
in view of Bowen and Finken, and further in view of Copeland;
and
c) claims 6 and 12 as being unpatentable over Hale in
view of Bowen and Finken, and further in view of Zide.
Reference is made to the appellant’s brief (Paper No. 7)
and to the examiner’s answer (Paper No. 10) for the respective
positions of the appellant and the examiner regarding the
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merits of these rejections.
To begin with, we shall not sustain the standing 35
U.S.C.
§ 103 rejections of claims 8 and 10 through 12. The scope of
these claims is indefinite for the reasons expressed below.
Accordingly, the standing prior art rejections thereof must
fall since they are necessarily based on speculative
assumption as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). It
should be understood, however, that our decision in this
regard is based solely on the indefiniteness of the claimed
subject matter, and does not reflect on the adequacy of the
prior art evidence applied in support of the rejections.
As for the standing 35 U.S.C. § 103 rejection of
independent claim 1, Hale discloses a baseball catcher’s head
gear which is designed for quick and easy removal during the
course of play. The head gear includes a helmet 10 and a face
mask 18. The face mask is hingedly connected to the helmet at
an upper central location by a belt strap 20 riveted to the
helmet and looped around a securing bar 22 on the face mask.
The face mask also is connected to the helmet at a lower
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position by an elastic strap 36 which extends around the
helmet and is connected to the sides of the face mask by belt
straps 38. The foregoing construction allows the head gear to
be quickly and easily doffed by “hinging the face mask 18
forward and raising the protective head gear upward and
backward to remove same” (column 2, lines 55 through 57).
As is implicitly conceded by the examiner, the Hale head
gear does not meet the limitation in claim 1 requiring
“elastic strap means connected between opposite sides of said
helmet adjacent to said face area and opposite sides of said
facemask for permitting said facemask to be slid from a first
position over said face area to a position over said top
portion” of the helmet. While Hale’s elastic strap 36 and
belt straps 38 arguably constitute elastic strap means
connected between opposite sides of the helmet adjacent its
face area and opposite sides of the face mask, these elements
would not permit the face mask to be slid from a first
position over the face area to a position over the top portion
of the helmet, at least in part due to the presence of the
belt strap 20.
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Bowen discloses a crash helmet 10 having goggles 32
attached thereto by a pair of elastic straps 34 and snap
fasteners 30. The goggles are movable between a first
position wherein they cover the eyes of the user (see Figures
1 and 2) and a second position wherein they rest on the top of
the helmet (see Figure 3).
Finken discloses a safety helmet 15 having an eye shield
1 attached thereto by elastic bands 9 and snap fasteners 13.
The bands include conventional sliders 10 which allow the
effective lengths of the bands to be adjusted.
According to the examiner, it would have been obvious to
one of ordinary skill in the art to replace Hale’s means for
attaching the face mask to the helmet with a pair of length-
adjustable elastic straps in view of Bowen and Finken to allow
the face mask to be stored on top of the helmet when not in
use (see pages 3 and 4 in the answer). The examiner indicates
that this modification would include the elimination of Hale’s
belt strap 20 (see page 5 in the answer).
We agree with the appellant, however, that this proposed
modification of the Hale head gear is based on impermissible
hindsight rather than on the fair teachings, suggestions and
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inferences of the prior art. Arguably, Bowen and Finken would
have suggested replacing Hale’s elastic strap 36 and belt
straps 38 with a pair of length-adjustable elastic straps.
The combined teachings of these references, however, would not
have suggested the elimination of Hale’s belt strap 20 so as
to permit the face mask to be slid from a first position over
the face area to a position over the top portion of the helmet
as required by claim 1. For one thing, Hale’s disclosure
indicates that the belt strap 20 is integral to the structural
relationship between the helmet and face mask which allows
them to be quickly and easily removed during the course of
play in a baseball game. Thus, Hale would appear to teach
away from the proposed elimination of the belt strap 20.
Moreover, the disclosure by Bowen, and apparently by Finken,
of goggles or eye shields which are capable of being moved
from a first position over the face area to a position over
the top portion of their associated helmets would appear to
have little, if any relevance, to Hale’s baseball head gear
and its intended manner of use.
Thus, the combined teachings of Hale, Bowen and Finken do
not justify the examiner’s conclusion that the subject matter
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recited in claim 1 would have been obvious at the time the
invention was made to a person of ordinary skill in the art.
Accordingly, we shall not sustain the standing 35 U.S.C. § 103
rejection of this claim.
Nor shall we sustain the standing 35 U.S.C. § 103
rejection of dependent claims 4 and 5 as being unpatentable
over Hale in view of Bowen, Finken and Copeland or the
standing 35 U.S.C.
§ 103 rejection of dependent claim 6 as being unpatentable
over Hale in view of Bowen, Finken and Zide. In short,
Copeland’s disclosure of an adjustable helmet suspension means
and Zide’s disclosure of a helmet chin strap do not cure the
above noted deficiencies of the basic Hale, Bowen and Finken
combination with respect to the subject matter recited in
parent claim 1.
The following rejection is entered pursuant to 37 CFR
§ 1.196(b).
Claim 8, and claims 10 through 13 which depend therefrom,
are rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the
subject matter the appellant regards as the invention. The
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scope of these
claims is indefinite due to the garbled manner in which claim
8 was amended in response to the first Office action (see
Paper No. 4). More particularly, claim 8 as amended contains
two periods. It is unclear whether the “whereby” clause which
follows the first period is intended to be part of the claim.
Also, the terms “said first position” and “said second
position” in the clause immediately preceding the first period
lack a proper antecedent basis.
In summary:
a) the decision of the examiner to reject claims 1, 4
through 6, 8 and 10 through 12 under 35 U.S.C. § 103 is
reversed; and
b) a new 35 U.S.C. § 112, second paragraph, rejection of
claims 8 and 10 through 13 is entered pursuant to 37 CFR
1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
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37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
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 proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Appeal No. 97-0828
Application 08/445,540
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Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-0828
Application 08/445,540
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John R. Duncan
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