Ex Parte Quinn

Board of Patent Appeals and Interferences

Sep 18, 2007

10445666 (B.P.A.I. Sep. 18, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES T. QUINN
__________

Appeal 2007-2404
Application 10/445,666
Technology Center 3700
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Decided: September 18, 2007
__________

Before TONI R. SCHEINER, ERIC GRIMES, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to headgear
for sports fans. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The Specification discloses “a one-size-fits-all combination mask and
cap that . . . comfortably allow[s] sports fans to show their allegiance to their
favorite team without suffering the various drawbacks and disadvantages
Appeal 2007-2404
Application 10/445,666

associated with face paint and the fan masks currently available”
(Specification 2-3). The Specification discloses that “the face mask and cap
are fixedly joined so as to eliminate the potential of loss or misplacement of
either component” (id. at 3). The mask/cap combination “is comfortable to
wear and . . . fits most wearers without any adjustment due to the elastic
nature of the mask providing a slight tension around the forehead of the
user” (id.).
DISCUSSION
1. CLAIMS
Claims 1-5 and 7-11 are pending and on appeal. Appellant states that
the appealed claims “form a single group of which Claim 1 is representative
and dispositive of this appeal” (Br. 3). Claim 1 reads as follows:
1. In combination, sports fan headgear comprising:
a pre-molded face mask of elastically pliable material
and sized to cover a person’s face from side to side and from
chin to forehead, said mask including a plurality of openings
therethrough to correspond to a person’s eyes, nose and mouth;
a billed cap having a scalp cover of fabric material
formed as a concave head covering, a visor secured to said
scalp cover, and a cap size-adjustment cut-out in said scalp
cover opposite said visor; and
attachment material permanently connecting said scalp
cover to said face mask adjacent said size-adjustment cut-out,
whereby the scalp cover may be optionally positioned on
a person's head with said visor to the rear while the face mask
covers the person’s face, or the scalp cover may be alternatively
positioned on a person's head with said visor forward while the
face mask covers the back of the person’s head.

Thus, claim 1 is directed to a billed cap having an elastic, full-face
mask permanently connected to the rear of the cap.
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Application 10/445,666

2. PRIOR ART
The Examiner relies on the following references:
Frislie US 5,845,340 Dec. 8, 1998
Ritchey US 5,067,174 Nov. 26, 1991
Reitz US 6,671,886 B1 Jan. 6, 2004
Cheatum US 2004/0010839 A1 Jan. 22, 2004
3. OBVIOUSNESS
Claims 1-5, 9, and 10 stand rejected under 35 U.S.C. § 103 as obvious
in view of Reitz and Frislie (Answer 3).
The Examiner cites Reitz as disclosing “a face mask 10 of pliable
material (e.g. rubber) [] with openings for the eyes and nose [and] a
conventional scalp cover equivalent to a scalp cover of fabric material as
claimed[;] also note the visor member of the conventional scalp cover 14 of
Reitz and attachment material 36” (id.). The Examiner concedes that
“Reitz does not teach the attachment material permanently connecting the
scalp cover and face mask,” but cites Frislie as “teach[ing as] old the use of
stitching as an alternative to stringing for permanently connecting a scalp
cover and face mask” (id.). The Examiner concludes that one of ordinary
skill would have considered it obvious “to substitute the stitching of Frislie
for the string 36 of Reitz to achieve an alternative and permanent means of
connecting the scalp cover and face mask” (id.).
Recently addressing the issue of obviousness, the United States
Supreme Court reaffirmed the conclusion “that when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
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Application 10/445,666

arrangement, the combination is obvious.” KSR Int'l v. Teleflex Inc., 127 S.
Ct. 1727, 1740 (2007) (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282
(1976)). The Court reasoned that
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
Id. at 1742.
We agree with the Examiner that one of ordinary skill would have
recognized that a permanent attachment means, such as Frislie’s stitching,
would have been useful for attaching the mask portion of Reitz’s mask/cap
combination to the cap portion. We therefore also agree with the Examiner
that claim 1 would have been obvious to one of ordinary skill.
Appellant argues that “the cited references neither individually nor in
combination disclose the claimed features of the invention” (Br. 3).
Specifically, Appellant urges that Reitz’s cap is distinguishable from the
claimed cap because Reitz’s cap has a conventional adjustment strap (id. at
3, 5), and because Reitz’s Figure 4 shows that the cap/mask combination can
be worn with the cap unattached to the mask (id. at 3-4).
We do not find this argument persuasive. We note that Reitz’s cap
has a conventional adjustment strap which could interfere with decorations
on the mask portion of the headgear (see Rietz, Figures 2 and 3). However,
because claim 1 uses the transitional term “comprising,” it encompasses the
presence of additional elements, including Reitz’s adjustment strap. See
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
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Application 10/445,666

(“‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.”).
We also note that Reitz’s Figure 4 shows the cap/mask combination
being worn with the cap unattached to the mask. However, both Figures 2
and 3 of Reitz show the cap and mask being worn with a strap connecting
the two portions of the device. Reitz also discloses that “[t]he mask body 22
can . . . be secured to the cap 14 by extending the end portions 44 of the
fastener straps 36 through at least one ventilation hole 16. However, the use
of at least two ventilation holes 16 is preferred” (Reitz, col. 5, ll. 36-39).
Given Reitz’s disclosure of the desirability of securing the mask to the cap,
we agree with the Examiner that one of ordinary skill would have considered
it obvious to use alternative attachment methods, such as stitching, to secure
the two items together.
Appellant argues that, although Reitz discloses that the mask may be
made of rubber, Reitz prefers the mask to be made of rigid or semi-rigid
material (id. at 4). Appellant urges that one of ordinary skill would select
rigid materials for Reitz’s mask because it would keep the two separate
panels that extend over the wearer’s face from flapping (id.). Appellant also
argues further that Reitz’s mask/cap combination fails to meet claim 1’s
limitation requiring the mask to extend from chin to forehead (id. at 4-5).
We are not persuaded by these arguments. It is well settled that, “in a
section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.’” Merck & Co. v. Biocraft
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Application 10/445,666

Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976).)
In the instant case, Reitz discloses the claimed features of flexible
material and chin to forehead coverage:
The decorative face mask of the present invention
includes a mask body which is preferably fabricated from a
rigid or semi-rigid polymer material. However, the use of other
rigid, semi-rigid or flexible materials (e.g., rubber, thickened
paper, etc.) is specifically contemplated herein. The mask body
may be sized and configured in differing styles to extend over
the entirety or portions of the user’s face.

(Reitz, col. 2, ll. 16-23, emphases added.) Thus, Reitz discloses that the
features recited in claim 1 were suitable for use in headgear for sports fans.
Appellant argues that the combination of Reitz and Frislie does not
render claim 1 obvious because Frislie is directed to a cold weather garment
in which a face protector is attached to a parka-type hood, whereas Reitz has
a separate mask and cap which are loosely connected by a flexible fastener,
the mask being wearable on the back of the user’s neck when not placed
over the face (id. at 6-7). Appellant emphasizes that Reitz teaches
consistently “that his mask is intended to be worn directly on the user’s head
as an alternative to connection with the cap. Therefore, Reitz’s own
statements completely contradict any suggestion of a permanent attachment
between the mask and cap as the Examiner suggests in his rejection” (id. at
6).
We are not persuaded by these arguments. As the Supreme Court
recently stated, “[a] person of ordinary skill is . . . a person of ordinary
creativity, not an automaton.” KSR, 127 S. Ct. at 1742. Thus, the analysis
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under 35 U.S.C. § 103 “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 1741.
We note that Reitz discloses that “the face mask may additionally be
used without the attachment to any type of head-wear” (Reitz, col. 2, ll. 2-4).
However, Reitz also clearly discloses embodiments in which the mask is
attached to the cap with straps (see e.g., id. at Figures 2 and 3). We agree
with the Examiner that, given Reitz’s teaching that the cap should be secured
to the mask, one of ordinary skill, being a person of ordinary creativity and
common sense, would have recognized that alternate attachment methods,
such as Frislie’s stitching, would be useful in accomplishing that attachment.
We therefore agree with the Examiner that claim 1 would have been obvious
to one of ordinary skill in the art.
We affirm the Examiner’s obviousness rejection of claim 1. Claims
2-5, 9, and 10 fall with claim 1 because they were not argued separately.
37 C.F.R. § 41.37(c)(1)(vii).
4. OBVIOUSNESS -- CLAIMS 7, 8, AND 11
Claims 7 and 8, both dependent on claim 1, stand rejected under 35
U.S.C. § 103 as being obvious over Reitz, Frislie, and Cheatum (Answer
3-4). The Examiner reasons that it would have been obvious “to provide the
scalp cover of Reitz with the colors, indicia and insignia of Cheatum to
achieve the advantage of displaying team affiliation with the scalp cover”
(id. at 4).
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Claim 11, which also depends from claim 1, stands rejected under 35
U.S.C. § 103 as being obvious over Reitz, Frislie, and Ritchey (id.). The
Examiner reasons that it would have been obvious “to further modify the
headgear of Reitz by using the adhesive of Ritchey et al. as the attachment
material to achieve an alternative means of forming a permanent connection
between the face mask and scalp cover” (id.).
Rather than separately contend the rejections of claims 7, 8, and 11,
Appellant states that all of the appealed claims “form a single group of
which Claim 1 is representative and dispositive of this appeal” (Br. 3). As
discussed above, we agree with the Examiner that claim 1 would have been
obvious to one of ordinary skill. We detect no error in the Examiner’s
conclusion of obviousness with respect to claims 7, 8, and 11. We therefore
affirm the Examiner’s obviousness rejections of those claims.

SUMMARY
We affirm the Examiner’s rejections under 35 U.S.C. § 103 of claims
1-5 and 7-11.

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Appeal 2007-2404
Application 10/445,666

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

AFFIRMED

lbg

JOSEPH B. BOWMAN
5441 EAST GLENEAGLES DRIVE
TUCSON AZ 85718-1805

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